All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Tuesday, June 28, 2011

BPAI reverses when Examiner interprets "permanently secured" as "user can choose not to remove"

Takeaway: The BPAI reversed several rejections based on the Examiner's unreasonable interpretation of "permanently secured" as "the user can choose not to remove it". (Ex parte Bivens.)

The technology in the application on appeal involved containers for fluids. One of the issues on appeal involved the limitation "permanently secured" as used in the following claim:

1. An apparatus for containing a fluid, said apparatus comprising:
(a) a body for containing a fluid ...
(b) a vent member being disposed in said body ...
(e) said vent member being permanently secured to said at least one sidewall of said body.

The Examiner issued multiple rejections of each independent claim. In one of the four anticipation rejections, the Examiner explained his interpretation of "permanently secured" as follows:

Goff teaches a bottle having at least an aperture, a vent member (Fig. 3) being a separate member and disposed in the body. The vent member has first and second ends and having fluid passageway for connect the opening. With respect to the vent member being permanently secured to the sidewall. It is noted that the term "permanently secured" is broad. The vent member in Goff is considered permanently secured as claimed, i.e, it can be left permanently in the bottle by the user.
(Emphasis added.)

The Examiner used a similar interpretation in another anticipation rejection, finding that a clip-on vent member as disclosed in the Moser reference "is permanent if left on the bottle by the user."

In the Appeal Brief, the Applicant argued that the Examiner had used an unreasonable interpretation of "permanently secured." With respect to the Goff reference, the Applicant argued:

[T]he spout attachment of Goff is by design removable. In no sense can it be said that a spout attachment that is designed to be removable satisfies the claim limitation that the vent member be permanently secured to the body. There is no evidence whatsoever in the record that "permanent" would be construed by one of ordinary skill in the art to include an element that was designed to be removed.

The Applicant made a similar argument with respect to the Moser reference, noting that Moser did not anticipate because it described a vent device "which can be easily attached to and removed from the bottle."

In the Answer, the Examiner maintained his position and further explained that "the term 'permanent' is broad and does not impart any structure over the attachment taught by Goff, i.e, one can choose to keep the attachment between the bottle and the vent permanently."

On appeal, the Board reversed all the anticipation rejections. In discussing the Goff rejection, the Board found that "Goff's vent has threads defining a removable structure. Thus, Goff's apparatus does not describe a vent member 'permanently secured' to a body as recited in claim 1." In discussing the Moser rejection, the Board found that "Moser's clip-on vent is removable. Thus, Moser does not describe a vent member 'permanently secured' to a body ..."

With respect to the third anticipation rejection (Cox), the Board found that the Examiner had incorrectly treated "permanently secured" as a product-by-process limitation and thus given it no patentable weight.

With respect to the final anticipation rejection, the Board found that the Examiner had made no findings whatsoever as to how the vent in Codorniz was permanently secured, since the only description in Codorniz merely stated that "air supply conduit 14 is mounted with an interior surface of the pouring neck 12."

My two cents: A righteous Examiner smack down. Too bad the Applicant had to wait three years to prevail over sloppy examination.

It wasn't all good news, however. The Board affirmed an obviousness rejection of a dependent claim -- where permanently secured was further limited to welding, which was disclosed by the secondary reference. The Board also entered an obviousness rejection of two of the independent claims, combining two of the references used for anticipation.

The Applicant was left with reversals of two dependent claims, however. So the Applicant should get a patent out of it.

Once again, the BPAI comes to the rescue of the Examiner yet by creating new rejections but they refuse to come to the aid of the Applicant by finding reasons why the Examiner's rejections were wrong that weren't spotted by the Applicant.

In situations like these, the Applicant should petition the Director for reimbursement of fees spent on appealing such awful and baseless rejections or, at the very least, petition that the Examiner be sent back to the Patent Academy for re-training on how to formulate a proper anticipaation rejection. The latter could be buttressed by citing previous BPAI decisions where the particular examiner was reversed by the BPAI.

"Once again, the BPAI comes to the rescue of the Examiner yet by creating new rejections but they refuse to come to the aid of the Applicant by finding reasons why the Examiner's rejections were wrong that weren't spotted by the Applicant."

The BPAI is not the examiner's spe/primary.

You guys seem to think there is some magical aspect to appeals where they're nothing more than "go here to make sure the case is being handled properly". That is not what the board is. The board is for the situations noted in the statute and is only there to hear applicant complaints, not be a super QA dept.

"A righteous Examiner smack down. Too bad the Applicant had to wait three years to prevail over sloppy examination."

Doubtful. The useless QAS who signed off on this appeal has signed off on so much garbage he could single handedly be responsible for the entire 22,500+ appeal backlog.

The examiner's "broadest reasonable interpretation" of "permanently secured" is that "one could choose to leave it attached" and this QAS just goes, "Yup, sounds reasonable to me. Send it up."

What are they paying this guy to do? Seriously, what oversight of his work is being done to ensure that he is actually "assuring quality"? If this type of garbage rejection is something he considers to be of sufficient "quality" to send to the Board for a decision, then what does he think is not sufficient quality?

Fire all QAS's. Don't reassign them as SPE's, or transfer them to petitions, or send them back to examining, just fire all of them.

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